IPBiz

Intellectual property news affecting business and everyday life

Wednesday, November 29, 2006

Massachusetts v. EPA related to KSR v. Teleflex

One Supreme Court case that will get more publicity than KSR v. Teleflex is Massachusetts vs. EPA, 05-1120, concerning whether the federal government can restrict vehicle emissions of greenhouse gases (including carbon dioxide [CO2]) under a provision of the Clean Air Act requiring regulation of pollutants. There are some points of similarity between "Massachusetts" and "KSR."

The San Francisco Chronicle noted:

The U.S. Supreme Court, tackling its first case on climate change, appeared divided and somewhat baffled Wednesday over how the government should respond to the warming of the planet.

The Supreme Court also seemed somewhat baffled in analyzing what is going on in the motivation inquiry in KSR.

The Chronicle noted:

Meanwhile, Justice Stephen Breyer suggested that a more activist response by government could halt global warming.

"Suppose, for example, they regulate this and before you know it, they start to sequester carbon with the power plants, and before you know it, they decide ethanol might be a good idea, and before you know it, they decide any one of 15 things, each of which has an impact, and lo and behold, Cape Cod is saved," Breyer said. "Now why is it unreasonable?"

IPBiz notes that the major greenhouse gas in terms of abundance is carbon dioxide (CO2). Carbon dioxide is the thermodynamically stable product of burning any carbon containing source (be it coal, gasoline, or ETHANOL) with oxygen. If you want ENERGY from burning carbon-containing fuels, you are going to make carbon dioxide. Having the EPA regulate the purchase and use of all carbon-containing fuels might be unreasonably ponderous, even if one did accept that carbon dioxide (a fairly inert chemical) were a pollutant. Regulating the production of an inevitable (and inherent) product of combustion is a bit different from regulating avoidable products, like sulfur and nitrogen oxides.

The Chronicle had a quote: "We have to go after carbon and reduce it wherever we find it, and the fact is about a third of the problem is from vehicles," Boxer said in an interview Wednesday. IPBiz notes that Boxer might want to check what fraction of ALL energy produced (in the US or in the world) comes from carbon-containing fuels, and what might want to substitute.

There was an issue of selective citation/non-citation of sources. The Chronicle noted: Justice John Paul Stevens also took on the agency's assertions about scientific uncertainty on climate change, saying the EPA deliberately ignored key findings from a respected National Academy of Sciences report on global warming. IPBiz is reminded of the eBay brief to the Supreme Court about how the USPTO grants 97% of patent applications, citing to the first Quillen and Webster paper. eBay ignored later modifications by Quillen and Webster AND criticisms of the entire Quillen and Webster approach. IPBiz is also reminded about certain unusual assertions about patent quality which were made in a National Academy of Sciences (NAS) report, as well as a basic error about the Wright Brothers patent.

There was an interesting exchange:

JUSTICE SCALIA: That isn't, that isn't -- your assertion is that after the pollutant leaves the air and goes up into the stratosphere it is contributing to global warming."

MR. MILKEY: "Respectfully, Your Honor, it is not the stratosphere. It's the troposphere.

JUSTICE SCALIA: "Troposphere, whatever. I told you before I'm not a scientist."

IPBiz notes that NONE of the Supreme Court justices are scientists. Yet, in KSR v. Teleflex they will rule on what is obvious to a scientist of ordinary skill in the art. Do they have the right background?

"We are not asking the court to pass judgment on the science of climate change," said Massachusetts Assistant Attorney General James Milkey in his opening arguments. That may be fortunate for some justices, including Antonin Scalia, who asserted erroneously that global warming occurs in the stratosphere before Milkey corrected him by noting that it was a tropospheric phenomenon. Scalia then confessed his scientific limitations: "I told you I'm not a scientist. That's why I don't want to deal with global warming."

That confession didn't prevent him from venturing into some deep scientific waters, however. At one point, Scalia questioned whether greenhouse gases should even be considered pollutants, noting that the resulting carbon dioxide is produced in a portion of the atmosphere not in direct contact with people. Milkey offered a counterexample, noting that Congress had authorized the regulation of sulfur dioxide, which people don't encounter directly but which causes harm after it washes out of the air in the form of acid rain.

Will the Supreme Court see new light or dark clouds in reviewing KSR v. Teleflex?

The Chicago Tribune ran a Bloomberg story on KSR which included the text:

[A] challenger seeking to invalidate a patent on grounds it simply combined previous inventions must prove there was a "teaching, suggestion or motivation" to put those earlier inventions together.

"It is misleading to say that the whole world is embraced within these three nouns," Justice Antonin Scalia said. "This is gobbledygook. It really is. It's irrational."

IPBiz notes that the --teaching, suggestion, or motivation-- test is but PART of the obviousness inquiry, so the CAFC is NOT embracing the "whole world" within these three nouns. The Trib notes a ruling is expected in July 2007.

The Supreme Court is wrestling with an abstract case involving automobile gas pedals that could apply the brakes to the dramatic growth in patents issued nationwide.

Frustrated justices Tuesday flipped through engineering diagrams as they pondered a question at the heart of many patent disputes: Is the invention truly unique or just an "obvious" recombination of existing components?

IPBiz notes that writer Jim Puzzanghera really missed the boat in thinking this was an "abstract" case. First, this is a real case, with real parties. Second, this case was selected by the motivation test opponents because of the EASE in visualizing the technology involved. In oral arguments in Festo (involving a piston used for example for submerged animals in DisneyWorld, which technology got into aspects about magnetic susceptibility), the justices completed avoided the technology, and even confessed they did not understand it. NOT SO IN THE KSR case. The justices in KSR can understand gas pedals and computer controls. One should remember the oddity in KSR that the Supreme Court is reviewing a NONPRECEDENTIAL case; there was no new law in KSR, and the issue in the lower courts was that the trial court did not articulate its reasons for finding motivation.

The LATimes quoted a different part of Justice Scalia's remarks: "Does it make sense to assume patents are valid that have been issued under an erroneous test for 20 years?" One separately asks: does it make sense for the Supreme Court to change the obviousness inquiry set up by the CAFC when the Supreme Court has had numerous opportunities since Sakraida (aka "that cow shit case") to review the test?For example, In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1900 (Fed. Cir. 1990) (in banc), cert. denied, 500 U.S. 904 (1991).

At the end of the day, the "settled expectations" issue will keep the Supreme Court from changing the obviousness inquiry in a major way. Recall what Justice Ginsburg said in Hilton Davis, which was embraced by the entire court in Festo. [Ginsburg, concurring in Hilton Davis: "The new presumption, if applied woodenly, might in some instances unfairly discount the expectations of a patentee who had no notice at the time of patent prosecution that such a presumption would apply....Years after the fact, the patentee may find it difficult to establish an evidentiary basis that would overcome the new presumption." (emphasis added). Festo: The Court of Appeals ignored the guidance of Warner-Jenkinson, which instructed that courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community.

For other discussion, seehttp://ipbiz.blogspot.com/2006/11/cafc-test-for-obviousness-irrational.html

See also the discussion Supreme Court: Current Test of Obviousness is "Gobbledygook" at Patently-O. ["Much of the oral argument was filled with an attempt to simply understand the TSM test, and to figure out what is meant by a “motivation.” If they cannot figure-out the test, they would likely completely trash-it as unworkable. Of course, by the time the opinion is penned, they will understand the current test and the test will not be scrapped as a whole. Rather, they will follow the Government’s suggestion that TSM continue to be used as a “valid means of proving obviousness.” In addition, however, flexibility will be added to allow for other ways of determining nonobviousness."] IPBiz query: If added flexibility means a lowered threshold to prove obviousness (a higher standard for the patentee to meet to establish nonobviousness), who would bother to use the motivation test to invalidate a patent when easier ways are available? Why wouldn't the patent litigation floodgates open?

The trial on Pfizer's Norvasc began on Nov. 28 in the Western District in Pennsylvania (WD Pa) under Judge Terrence McVerry and is expected to last about a week.

The Pfizer '909 patent covering Norvasc (Amlodipine Besylate, used for treating high blood pressure) expires in March, 2007 but the company gained a six-month extension for conducting pediatric studies.

Mylan has NOT started to sell its generic; Mylan could face heavy damages if it started selling its product and then lost the patent trial.

Tuesday, November 28, 2006

Chief Justice Roberts said of the motivation test of the CAFC: it "adds a layer of Federal Circuit jargon that lawyers can then bandy back and forth. It seems to me that it’s worse than meaningless because it complicates the inquiry rather than focusing on the statute." Of an assertion that experts had said the Teleflex patent was NOT obvious, Roberts said: “Who do you get to be an expert to tell you something’s not obvious? I mean, the least insightful person you can find?” [See LINDA GREENHOUSE, Supreme Court Weighs the Meaning of ‘Obvious’]

Greenhouse also noted: Thomas G. Hungar, a deputy solicitor general, told the justices that “as the sole means of proving obviousness, the teaching-suggestion-motivation test is contrary to the Patent Act, irreconcilable with this court’s precedents, and bad policy.” IPBiz notes that the motivation inquiry is but part of the obviousness inquiry. See In re Dillon.

Reuters quoted Justice Scalia: "This is gobbledygook. It's irrational." and Reuters asserted this echoed doubts expressed by a number of the justices. During Tuesday's arguments, at least six of the nine justices expressed reservations about the federal circuit's obviousness test.

However, it's one thing to criticize the CAFC standard, and quite another to come up with a better obviousness test. Reuters noted: However, the justices struggled to come up with an alternative test for what inventions are obvious. And they expressed concerns that wholesale changes to the patent standards could disrupt businesses and inventors.

If the high court strikes down the obviousness test, Justice David Souter asked, "Are there going to be 100,000 cases filed tomorrow morning?"

BusinessWeek discussed some remarks critical of the CAFC standard and quoted Justice Kennedy:

Justice Anthony Kennedy seemed to agree.

"Why is (it) such a big deal" to combine the adjustable and electronic pedals? Kennedy asked. "Certainly this inventor would not be the only one to think that the two could and should be combined."

BusinessWeek also quoted Justice Breyer:

Justice Stephen Breyer added a down-to-earth note, wondering if he would be entitled to a patent for moving his electric garage-door opener from the bottom of the door, where it had been chewed on by squirrels, to the top.

IPBiz notes that these quotes tend to miss what was going on in the KSR case. The CAFC remanded simply because the district court didn't articulate its reasons for finding motivation.

I attended the oral argument. The Justices appear to hate the Motivation test, especially Breyer and Scalia. A patent examiner was sitting down the row from me and had a look on his face like Christmas had come early. I can see Examiners swinging from chandeliers at the PTO, chugging beer bongs, and blasting their 8 track players.

For all of us (attys & examiners), the problem was that none of the attorneys could fully fight for the Motivation test. Respondent's attorney couldn't fight too hard because he'd have to as much admit that when the test is properly applied, this patent will probably be invalidated. He did a great job by the way, and did acknowledge that the patent may not survive at the very end of his argument.

I think the Justices would not have been so hostile to the test if the issued had been framed thusly: the trial court lazily reached the conclusion of obviousness and failed to articulate why the invention is obvious. The Motivation test may have warts, but it doesn't do too bad a job.

Obviousness: KSR today, Sakraida, "that cow shit case," yesterday

Tony Mauro includes the following in his discussion of today's oral arguments in KSR v. Teleflex:

[According to the book, The Brethren,] a 1975 patent case named Sakraida v. Ag Pro was labeled the "cow shit case" among justices and clerks, only partly because it involved the patentability of a system used to clean the floors of dairy barns.

Chief Justice Warren Burger assigned the case to his liberal nemesis, Justice William Brennan Jr., instead of John Paul Stevens, then the Court's junior justice. Brennan was insulted, according to the book, and he wrote the decision himself to spare his law clerks from the humiliation of getting involved. The ruling, which struck down the patent because of obviousness, is cited in numerous briefs in the case now before the justices.

Mauro's article does touch on the stability issue, a point made by Justice Ginsburg in Warner-Jenkinson v. Hilton Davis, and later re-enforced by the Supreme Court in Festo:

Because "many millions" of patents were granted under the disputed [motivation] standard and patents can be challenged at any time, Goldstein says, "If the Supreme Court does decide to make a substantial change, it will call into question innumerable patents." [Goldstein is a contributor to Legal Times.]

The need to have "settled expectations" is likely to keep the Supreme Court from strongly changing the motivation test of the CAFC. If not so, the Supreme Court would be guilty of the same expectation-bashing in KSR for which it chastised the Federal Circuit in Festo.

In another sign of the legal community's ambivalence about the case, Stanford Law School professor and leading patent scholar Mark Lemley, in effect, switched sides. At first he joined petitioner KSR in urging the Court to review the Federal Circuit's standard. But after seeing signs of flexibility in some recent Federal Circuit rulings, Lemley changed his mind and joined a brief siding with Teleflex. He now defends the standard as "the best we've got right now."

Mauro talks about James Dabney:

KSR's Dabney sniffs that "you should examine with care the professional interests" of the leaders of the bar groups, adding that "the briefs don't reflect the views of all the members." In an acidic footnote in one of his briefs to the Court, Dabney also expresses wonderment about the bar's interest in stability "in view of the enormous fees that litigation of invalid patent claims can generate."

IPBiz notes that the patent litigation business would be greatly enhanced by a change of rules to determine obviousness, as there would be more incentive to litigate patents newly made obvious by a changed standard. Dabney's footnote doesn't pass the straight face test.

Mauro talks about some facts of the case:

The case in which the Court finally agreed to review it was an unpublished opinion issued in January 2005. At issue is a Teleflex patent issued in 2000 for an adjustable gas pedal for cars, designed to accommodate what KSR's Dabney describes as "the five percent female" -- petite-sized women who need to reach the pedal without getting too close to the steering wheel's airbag. Teleflex sued competitor KSR in the Eastern District of Michigan for patent infringement. KSR countered by challenging the validity of the patent as a too-obvious combination of existing elements. The district court agreed that at least one part of the patent was invalid because it was obvious.

But the Federal Circuit reversed, finding that KSR had not shown enough evidence that because of prior "teaching, suggestion or motivation," the patented product was an obvious development that made it undeserving of a patent.

IPBiz notes that an important point to note is that the Supreme Court here is reviewing a NONPRECEDENTIAL opinion. It is puzzling that the Supreme Court would analyze a case that cannot be cited for precedent. Separately, the CAFC did not make a substantive ruling, but merely sent the case back for the district court to present evidence of motivation to combine the references. For the law, the CAFC cited the Kotzab case.

Monday, November 27, 2006

Financial Foundry, LLC of Princeton announced on Nov. 27 that the U.S. Patent & Trademark Office has issued patent no. 7,136,833, entitled “Communication Network Based System and Method for Auctioning Shares of an Investment Product.” Financial Foundry, LLC is a private product development company controlled by Gene Podsiadlo, the inventor, and holds the exclusive license for the patent. The patent includes claims relating to a process for pooled investment funds, including mutual funds, that allows investors to bid on shares of an investment fund at less than its Net Asset Value (NAV), allowing the realization of a simple investment return based on the difference between the winning bid price and the Net Asset Value of the fund.

Plagiarism is the worst sin for any writer. True, critics of Ian McEwan have only argued that he “copied” the work of the “queen of the hospital romance”, Lucilla Andrews, but the implication amounts to the same thing.

“Booker prize-winning novelist is a fraud” is the message, with an unsung and now conveniently deceased author his secret weapon.

And yet: not quite. Despite the accusations aired in The Mail on Sunday yesterday [Nov. 26], it is admitted that there is an acknowledgement of Andrews’ work in Atonement, alongside acknowledgements of other sources. That, I find myself thinking, is what novelists do when they choose to take on historical subject matter: research is the name for this work.

Although not mentioned in the Times article, there is a saying: "Copy from one person and it's plagiarism, from many and it's research."

***Reuters noted-->The former agent of Lucilla Andrews, Vanessa Holt, said that Andrews, who made a living from so-called "hospital romances", had been aware of the parallels between her autobiography and "Atonement" about a year before she died, after a student drew attention to them.

IPBiz notes that there was no Google or Turnitin here, but more the mechanism involved in "Opal Mehta."

Back in October, Jon Van of the Chicago Tribune presented an article Slow patent process hurts nanotech progress. On November 27, the Seattle Times ran the same article under the title: Patent backlog hampers nanotech sector.

How about "Glacially slow recognition of issues undermines credibility of newspapers?"

As a separate matter, there are literally hundreds of US patents in the area of fullerenes, but vanishingly small commercialization. This observation undermines any theory that the USPTO is to blame as to fullerenes. Recall also the article in the Wall Street Journal: Whatever happened to the buckyball? Nobody knows. Maybe the Seattle Times can republish that article...

Larry Galler discussed his experience with "Everyday Edisons," a PBS show on inventors spearheaded by Louis Foreman:

I was placed on one of four "screening panels," comprised of a patent attorney, product development, engineering and marketing experts. We listened to inventors give their two-minute presentation. Some had brought working models, prototypes and drawings; others had just a verbal explanation. A quick patent search was conducted which eliminated most of the inventions from further consideration.

Out of 1,600 inventions viewed (until about 10 p.m.), about 70 were sent to a second panel for further evaluation. After deeper patent searches and more evaluations for marketability and practicality, just a handful (two to five) will actually make it to the TV show.

Galler started his story in nwitimes with the paragraph:

There is a story that years ago a person high up in the U.S. Patent Office resigned. The reason stated was that "everything worth inventing had been invented." That certainly was not the case, as evidenced by my recent experience.

This presumably refers to the urban legend about Charles H. Duell, which has been discredited many times. Lookhere andhere.

Back in September, Steve Lohr of the New York Times wrote of the Hatch/Leahy bill (S 3818): Yet any legislation is not likely to be enacted for another year or two.

In November, STEVEN R. APPLETON, the chairman, CEO and president of Micron Technology, wrote in the Salt Lake Tribune: Sen. Hatch has crafted bipartisan legislation that will reform and modernize the patent litigation system to stop the abuses that are hurting consumers, businesses, and small and large users of our patent system alike. For that, he deserves our gratitude.

The key word, post-Election Day 2006, is bipartisan. Senator Hatch worked with Senator Leahy in crafting S 3818. Given the way things turned out, Senator Hatch deserves our thanks for creating a template which may get some traction in the next Congress.

Appleton also wrote: As a result, the system that governs how the courts oversee patents has been thrown out of balance. To take advantage of this imbalance, new companies are dedicating themselves not to creating new products, but exclusively to suing other companies. They sue, not because they have legitimate patent claims, but because they are confident they can settle with defendants who would rather not spend time, money and manpower mounting a legal defense only to lose big on an uneven playing field.

Appleton did not use the words "patent troll," although one suspect the new companies he mentions might be deemed patent trolls by some. He does convey the idea that patentees who don't have legitimate patent claims are winning on an uneven playing field. It would be nice if Appleton backed up his perception with some specific examples.

***Separately, a book on Strategies For Settling Patent Litigation includes the following:

Saturday, November 25, 2006

FRAP 32.1 takes effect on Dec. 1, 2006

Onward, Christian Soldiers?

Back in 2004, IPBiz wrote "The July 12 issue of PTCJ [Vol. 64, No. 1580] contained some discussion of unpublished or nonprecedential opinions. It quoted Kenneth J. Schmier about the issue of fostering indifference about injustices or error."

In the time since, we have gained FRAP 32.1. This allows citation of nonprecedential opinions, but does not disallow nonprecedential opinions. STEPHEN R. BARNETT wrote:

In what has been called the most controversial issue in the history of the judicial rulemaking process, a committee of the United States Judicial Conference has proposed a new Federal Rule of Appellate Procedure, FRAP 32.1, which would require all federal circuit courts of appeals to permit citation of their unpublished opinions (or orders). The proposed rule - scheduled for action by the Judicial Conference on September 20, 2005 - has produced a rare outpouring of 513 public comments. These come overwhelmingly from lawyers and judges in the Ninth Circuit; they are overwhelmingly opposed to Rule 32.1; and they overwhelmingly predict dire results if the rule is adopted.

The proposed rule offers a natural experiment. The rule would require four federal circuits, the Second, Seventh, Ninth, and Federal, to do what the other nine circuits already do: let their unpublished opinions be cited. It should be possible, therefore, to examine the situation in the nine circuits where citation is allowed - the citable circuits - to see whether harmful effects have in fact come to pass when citation is permitted. This paper examines for that purpose two groups in citable circuits from whom one would have expected to hear of such adverse effects if they existed: (a) federal circuit judges, and (b) attorneys in federal public defender offices (federal public defenders).

Howard Bashman wrote:

FRAP 32.1, permitting citation to unpublished and non-precedential federal appellate court rulings, stands as the most controversial amendment to the Federal Rules of Appellate Procedure of all time. Nevertheless, this new rule is guaranteed to arrive on the scene not with a bang but with a whimper. That's because, although FRAP 32.1 officially takes effect on Dec. 1, the rule will only apply to unpublished and non-precedential opinions issued on or after Jan. 1, 2007. As a result, the impact of FRAP 32.1 will probably be imperceptible for many months in those circuits that, before the new rule's advent, had prohibited any citation to their own unpublished and non-precedential decisions. And because non-precedential opinions will continue to lack precedential value even after FRAP 32.1 takes effect, savvy advocates will only cite to unpublished or non-precedential rulings in the absence of any equally relevant published and precedential decisions.

About fostering indifference to injustices, recall the words of Judge Lourie in Amgen v. Hoechst: "while the result may be of exceptional importance to the parties, it does not seem to be so to the law."

Friday, November 24, 2006

Lemley switches sides in KSR v. Teleflex

In June he and 23 other law professors urged the Supreme Court to hear KSR's appeal. Then, in October, he and four different law professors signed on to an amicus brief siding with Teleflex. What happened? Lemley says that after he filed his June certiorari petition, the U.S. Court of Appeals for the Federal Circuit issued three decisions that made him change his mind. "If the Federal Circuit had issued those decisions two years ago, I would not have supported KSR's petition for cert," he says. He also notes that two new law review articles -- written by two of the professors who joined him on the Teleflex brief -- made him realize that the status quo doesn't need fixing.

The KSR case initially attracted the attention of reform-minded patent professors like Lemley, who believed that the Federal Circuit had been too loose with an important standard -- that patents should not cover obvious inventions. At the district court, KSR had argued that Teleflex's patent should be invalidated because it covered an obvious invention. Neither gas pedals nor electronic sensors are new technology, KSR argued. There was nothing innovative in combining the two. The court agreed, but the decision was reversed on appeal. The Federal Circuit ruled that because no one had suggested combining these two technologies in any written prior art, the invention was not obvious.

In their petition, Lemley and company argued that by relying so heavily on written prior art, the Federal Circuit had lowered the patent bar too far. Sometimes an invention is so obvious that no one ever even bothers to write about it, they said.

(...)

Lemley changed his mind about this after reading a paper written by University of Richmond School of Law professor Christopher Cotropia, who found that the court does consider sources besides written prior art. Cotropia, who was a student of Lemley's at the University of Texas School of Law and cowrote the Teleflex brief, analyzed three years' worth of Federal Circuit decisions involving obviousness. (The Notre Dame Law Review plans on publishing his article in early 2007.) Lemley also looked at research done by Gregory Mandel, a professor at Albany Law School in New York. Mandel had 247 law student volunteers pose as jurors, and he split them into two groups. One group was told about an invention, and then learned the history of its discovery. This group was much more likely to see an invention as obvious. (It's like being told Bruce Willis's character is a ghost before sitting down to watch "The Sixth Sense.") The other group learned the invention's history first, and was less likely to see the invention as obvious.

(...)

KSR's lawyer James Dabney, a partner at Fried, Frank, Harris, Shriver & Jacobson, says that the change doesn't weaken his client's position at all: "The solicitor general of the United States and the Patent and Trademark Office have filed a brief that strongly disagrees with Mr. Lemley's newly expressed views," he wrote in an e-mail.

***

The motivation test of the Federal Circuit is designed to combat hindsight determinations of obviousness, and is at issue before the Supreme Court.

In a story "Largest manhunt in Israeli history for escaped rapist," the Jerusalem Post reported:

It was also unclear how Sela, at a height of 1.65 cm, was able to scale a 2.30 cm. high wall, topped with barbed wire, in a matter of seconds while he was handcuffed.

Elsewhere in the article:

It appears Sela planned his Friday escape from police custody ahead of time, and duped the police into taking him to a court hearing that never existed.

A Courts spokesperson said that according to an initial check, there was no planned hearing at the Tel Aviv Labor Court for Sela. The spokesperson added that the Court had closed all files regarding Sela a long time ago.

In addition to searching for Sela, Police were also looking into how he managed to convince the Prison's Service that he had a hearing in court, when the Labor Court does not even hear cases on Fridays.

Critics of the Federal Circuit [motivation test for obviousness] argue that this has made it too difficult to prove that a claimed invention is obvious and therefore too easy to obtain a patent, because if a potential invention is obvious then technical experts may not have written anything about it.

(...)

But companies that support the Federal Circuit's test argue that it is effective in countering the problem of "hindsight bias."

John Duffy, a George Washington University professor who helped prepare KSR's Supreme Court filings, said that if the Supreme Court overturns the Federal Circuit's standard, it would make it easier for businesses to defend themselves against patent infringement suits by invalidating questionable patents. That could result in less patent litigation overall, he said.

Most legal experts expect the Supreme Court to modify the Federal Circuit's standard in some way. Goldstein said the court could even set a new standard for determining what's obvious.

IPBiz notes that if the Supreme Court is as "hands off" as it was in Merck v. Integra, then little may happen. On the other hand, in Festo, the Supreme Court formulated tests that were simply pulled out of thin air.

An AP story made clear how much college football is simply a business:

"It has been evident this season that we have not progressed," university president Donna Shalala wrote in a statement. "It is time for us to reclaim our national championship tradition. ... I want to make it clear that no celebration is in order today. This was not an easy decision."

Meanwhile, more changes could be coming to Miami. Shalala announced "a six-month fundraising sprint to secure commitments from our supporters/donors to finance competitive coaching contracts and build and renovate first-class facilities and programs."

"We need a new start," Shalala said.

Coker was 59-15 at Miami; one might contemplate Schiano's record at Rutgers.

Ian Wilmut is prepared to tread in the area of Hwang Woo-Suk's fraud, so-called therapeutic cloning (SCNT of humans to generate "patient specific" stem cell lines). Ian Wilmut stated: "There may be something fundamentally different about the biology of primates." Wilmut believes the controversial human research should be expedited, rather than attempting to perfect the technique in animals first, as opponents of therapeutic cloning argue.

IPBiz notes that Wilmut's arguments seriously undercut the arguments of PubPat and FTCR as to the "obviousness" of the Thomson / WARF patents on human stem cells. If there is something fundamentally different about primates, then work on mice does not render human work obvious.

****Yonhap News reported on November 23: South Korea's blue-ribbon panel on research ethics said Thursday [Nov. 23] it is considering limiting the number of ova women can donate in her lifetime for research purposes.

The move was contained in a final report by the National Bioethics Committee (NBC) on the scandal surrounding disgraced scientist Hwang Woo-suk's past stem cell studies, which had serious ethical lapses.

Megan le Masurier of the University of Sydney: "Plagiarism is a sign of discontent. They think their teachers are so busy. They want to be noticed and it's almost a testing gesture, a payback, like a response to feeling neglected.

"Also, if your motive for learning is instrumental, perhaps you have a very different attitude to how you behave. It's a leap across a boundary, into dishonesty and, in the real world, into copyright infringements. But there is a sense in which it's an educational issue, not a legal issue."

Funding cuts have forced Australian universities to take in large numbers of fee-paying overseas students. They number about 240,000, or a quarter of the student body.

***IPBiz notes that plagiarism and copyright infringement are distinct concepts.For example, look here Further, given the frequent appearance of plagiarism by professors (for example, at Harvard Law School), one surmises that students are indeed merely jumping into the real world. Also, if teachers were truly familiar with a given subject, they would recognize plagiarism at a glance, just as the readers of "Opal Mehta got kissed" recognized the plagiarism on sight.

Further to the Opti lawsuit against AMD, Microunity is asserting that AMD is infringing on claims of twelve of its patents, including one for a "general purpose, multiple precision parallel operation programmable media processor," which Microunity says AMD violates in practically all of its processors, including various incarnations of the Athlon, Sempron, Turion, and Opteron.

Thursday, November 23, 2006

The Supreme Court is to hear oral arguments in KSR v. Teleflex next week.

InformationWeek wrote: A victory for the company could result in lower courts applying a more liberal standard in defining what is obvious

A victory for KSR might mean a legal rule making it EASIER to find obviousness and thus HARDER to get a patent. Specifically, the motivation test of the Federal Circuit is under attack. The motivation test was designed to avoid hindsight reconstruction of an invention. If one looks at enough references, one can generally find each element of a claimed invention. The trouble is, if one had to look at N references to find each aspect of the claim, how does one know that one of ordinary skill at the time of filing would have looked at N references? One has to avoid using the patent application itself as a guide to the invention and thereby reconstructing the invention after the fact.

We turn first to a comparison between the prior art and the claimedinvention. In this inquiry, we are mindful of the repeated warnings of the Supreme Court and this court as to the danger of hindsight bias. See, e.g., Graham, 383 U.S. at 36 (consideration of secondary factors "serves to guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue" (internal quotations and citations omitted)); In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) ("The very ease with which the invention can be understood may prompt one to fall victim to the insidious effect of a hindsight syndrome wherein that which only the invention taught is used against its teacher." (internal quotations omitted)). We note in this respect that the district court's use of an "overall picture" and "common sense" test of obviousness falls squarely into the hindsight trap. See In re Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).

***The claim of US 6,237,565 that is at issue states:

4. A vehicle control pedal apparatus (12) comprising:

a support (18) adapted to be mounted to a vehicle structure (20);

an adjustable pedal assembly (22) having a pedal arm (14) moveable in force and aft directions with respect to said support (18);

a pivot (24) for pivotally supporting said adjustable pedal assembly (22) with respect to said support (18) and defining a pivot axis (26); and

an electronic control (28) attached to said support (18) for controlling a vehicle system;

said apparatus (12) characterized by said electronic control (28) being responsive to said pivot (24) for providing a signal (32) that corresponds to pedal arm position as said pedal arm (14) pivots about said pivot axis (26) between rest and applied positions wherein the position of said pivot (24) remains constant while said pedal arm (14) moves in fore and aft directions with respect to said pivot (24).

The 2005 decision of the Federal Circuit is not citable as precedent (nonprecedential). In ED Michigan, defendant KSR prevailed on a summary judgment motion for invalidity. Teleflex appealed for several reasons. One asserted an error of law based on an incorrect teaching-suggestion-motivation test. For prior art, the district court had relied on the Asano patent (5,010,782) and asserted that electronic controls (not taught by Asano) were well known in the art. In finding the district court's analysis wrong, the CAFC cited Kotzab, 217 F.3d at 1371, observing the district court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim 4 of the ’565 patent.

Judge Lourie: A panel is entitled to err

Claim interpretation: a big toothache at the Federal Circuit?

In the order denying en banc consideration in Amgen v. Hoechst, Judge Lourie concurred and stated: "A panel is entitled to err without the full court descending upon it." Judge Lourie also felt that the interpretation of the claim limitation "a therapeutically effective amount" is case-specific. He also noted that "while the result may be of exceptional importance to the parties, it does not seem to be so to the law."

Although lawyers may understand the point about the limited purposes for en banc review, members of the general public may find it disturbing that appellate judges will allow known errors in panel decisions to pass by without correction. Losing a case for incorrect reasons is of profound importance to the party who lost, but who should not have lost. Imagine losing a case which hinged on the identity of Lewis acid, with the panel pointing to a definition which relied on the distinct concept of electron affinity.

In work published in Nature, Nature Genetics and Genome Research, scientists disclose that the 2,900 genes of the human genome could vary in the number of copies possessed by the individuals. Each of us is more different genetically than we previously believed. These "multiple copy numbers" differ from one person to another, which could explain human physical and even mental variation.

One practical benefit is that it could lead to a new understanding of some of the most difficult, incurable diseases.

The distinction between plagiarism and copyright infringement

Further to various posts on plagiarism (for example, here), IPBiz notes that the general public may not appreciate the difference between plagiarism and copyright AND SEPARATELY the impact of the Supreme Court's Dastar decision on false attribution cases.

MICHAEL LANDAU discussed some of the issues in DASTAR V. TWENTIETH CENTURY FOX: THE NEED FOR STRONGER PROTECTION OF ATTRIBUTION RIGHTS IN THE UNITED STATES, 61 N.Y.U. Ann. Surv. Am. L. 273 (2005):

[Of the distinction between copyright and plagiarism]

Although some have used plagiarism and copyright infringementinterchangeably, plagiarism and copyright infringement are not the same thing. While one who commits copyright infringement, (e.g., by reproducing anddistributing another's work without authorization), may also be committing plagiarism by not giving attribution to the original author, there are numerous situations - such as "fair use" and the use of public domain materials - in which the unauthorized use of a work may not rise to the level of copyright infringement, but certainly constitutes plagiarism.

Plagiarism is presenting another's ideas or written material without giving attribution to the original author, or worse, giving the distinctimpression that the unattributed material is the original work of theplagiarizer. There are numerous definitions of plagiarism.

[C]opyright protection has nothing at all to do with attribution or credit. It provides only the rights of reproduction, distribution, display, performance and others set forth under section 106.

[Of the impact of Dastar]

Because the right of attribution under copyright law applies only to a verylimited category of works, the Supreme Court in Dastar effectively ended mostcauses of action for false or misleading attribution of artistic works. This will encourage plagiarism and misattribution, especially when there is so much material available that is so easy to reproduce and distribute.

(...)The Dastar opinion's effect on the real world will be great and wide-reaching, possibly broader than the Court intended at the time that it decided the case. The question presented for review, however, was quite broad and so were many of the statements in the opinion. As a result, the decision applies to both public domain works and copyrighted works. In addition, state statutory and common law causes of action for "unfair competition," "false designation of origin," and "unfair trade practices" will probably also be preempted, closing even those avenues for recovery for misattribution. As a result, outside of institutions or professions with their own codes of conduct or internal sets of rules that severely punish plagiarism, we can expect plagiarism and artistic misattribution to dramatically increase.

Alcatel is going after Microsoft in ED Texas, which lawsuit may be related to a previous suit by Lucent (now owned by Alcatel) in San Diego, CA.

The Register notes: The cost of such actions can be harmful to FLOSS companies who lack the money of their closed source cousins. The average patent suit costs $2m, according to the American Intellectual Property Lawyers' Association [AIPLA].(...)This latest action "will be viewed with dismay by the free software and open source community and viewed as proof of the inherent dangers of recognising IP in software. IP claims are an easy target for attorneys seeking easy money as defendants tend to settle out of court rather than risk a costly case where they may pay even greater damages."

InformationWeek reported: "Alcatel's recent filing appears related to longstanding patent litigation between Lucent and Microsoft in U.S. District Court in San Diego, which Alcatel is inheriting as part of its merger with Lucent," said Guy Esnouf, Microsoft spokesperson, in e-mail. "Alcatel filed its claims this past Friday -- the same day that its merger with Lucent was approved by the U.S. government."

In the previous litigation, Microsoft was accused of using in its Xbox 360 game system video-related IP Lucent that had developed. The action seeks royalties from Microsoft and some of its customers.

Alcatel claims Microsoft infringed on seven patents that appear to cover a wide range of video IP as well as the Xbox claim.

***

Separately, a jury in the U.S. District Court in Los Angeles awarded LG Philips $53.5 million in damages, and the judge will determine issues of willful infringement, possibly raising damages as high as three times the jury award. The defendants were Chunghwa Picture Tubes and Tatung Co., of Taiwan. LG Philips is a joint venture between LG Electronics of South Korea and Royal Philips Electronics of the Netherlands.

Tuesday, November 21, 2006

COMMWEB on IBM patent policy

Further to IBM's patent policy of apparent schizophrenia, COMMWEB wrote on October 30, 2006:

IBM's strategy is to be an IP benefactor to the tech industry when it's in IBM's interest, while staunchly defending its IP rights at other times. That's hardly reassuring to entrepreneurs and startups that risk a run-in with IBM as they develop new products. IBM holds about 40,000 patents worldwide for everything from how to display ads online to the creation of an Internet checkout system. IBM patents cover "most of, if not all, e-commerce," senior VP John Kelly told The Wall Street Journal last week.

(...)

Not everyone buys the patent-reform agenda of the big tech companies. Hans Hxu, founder of online gift registry Felicite.com, says the industry's large players are more interested in the appearance of IP openness than in practicing what they preach. "IBM patents almost everything they do, then they sit on it. That doesn't do much to encourage innovation," says Hxu, a McKinsey consultant before launching Felicite.

Toxic buckyballs in skin cream?

New to the Hong Kong market, this cream contains a Nobel prize-winning ingredient, Fullerene C-60, which is said to be a powerful neutraliser of free radicals (100 times more effective than the same concentration of vitamin E, according to Zelens). The product is being touted by some as the ultimate time-fighting cream.[from South China Morning Post, 2 Nov 06]

Star-Ledger; New York Times disagree on Rutgers at Texas Bowl

If Rutgers wins its final two games, it goes to Jan 2 Orange Bowl as Big East champions, to face ACC champion.

If Rutgers splits, likely Dec. 29 Sun Bowl, with a Pac-10 team.

--The Big East also has tie-ins with the Dec. 23 PapaJohn's.com Bowl in Birmingham; the Dec. 28 Texas Bowl in Houston, and the Jan. 6 International Bowl in Toronto. Rutgers, however, doesn't appear to be a candidate for any of those.--

-->New York Times, section D, p. 6 (20 Nov. 06)

Rutgers Learns Downside Of High Expectations

The Scarlet Knights cannot look down on the Texas Bowl, because barring an upset, they could be headed there.

Should Louisville and West Virginia win their last two games, they will finish first and second in the Big East. Rutgers will be in third, and under the Big East bowl agreements, the third-place team would most likely be picked by the Texas Bowl.

Such are the consequences of Saturday's loss to Cincinnati, which took the Scarlet Knights out of the top 10, out of the ranks of the unbeaten, and out of style. If the Empire State Building is lit up again in red, it figures to be for Christmas, not for Rutgers.

The Scarlet Knights are now experiencing the downside of college football prominence: the backlash that comes when high expectations are unmet.

UPDATE. Nov 30 -->

Paul Franklin of the Home News had some additional observations on Rutgers and the Texas Bowl. Interestingly, the NFL Network has exclusive rights to the Texas Bowl, the reason being that the Houston Texans own the game that is played at Reliant Stadium. However, rights to the game could be bought by a another network. Franklin ends: Let's face it, Rutgers-Oklahoma State or Rutgers-Texas Tech, even on local TV [at the Texas Bowl, if Rutgers loses to WVU], would be a huge disappointment. Rutgers-LSU in the Sugar Bowl or Rutgers-Florida in the Orange Bowl, on national TV?

UPDATE.

Bloomberg reported on Dec. 18: The NFL Network accepted an offer by Time Warner Cable to televise Rutgers University's appearance in the Texas Bowl to about 75 percent of its customers in New York and New Jersey. (...)The NFL wants its channel to appear in basic-cable packages with ESPN and CNN, where it can reach the broadest audience. Time Warner wants to place the NFL Network in a sports package, or tier, where its audience would include only customers willing to pay extra.

The NFL Network said in a statement that about 75 percent of Time Warner's customers subscribe to the digital-basic tier, so the cable company's offer was the ``quickest and best way to bring Rutgers' appearance in the Texas Bowl to Time Warner subscribers and to make the free-view a reality.'' Rutgers is the state university of New Jersey.

The three-year-old NFL Network reaches about 41 million of the 90 million U.S. cable subscribers.

Cablevision has about 3.1 million subscribers in New York, the nation's biggest market. Time Warner has about 1.4 million subscribers in New York, 1.9 million in Los Angeles and another 10.2 in 33 states.

IPBiz has reviewed the first rulemaking matter (on limiting continuing applications) and there is a discussion in 88 JPTOS 743.

The second rulemaking matter included something called an "examination support document" [ESD]: in the event that an application contains or is amended to contain more than ten representative claims, the applicant is required to submit an examination support document to “share the burden” with the PTO.

The examination support document requires (A) a statement that a search was conducted, (B) an information disclosure statement listing the most closely related references, (C) a comparison between the limitations of the representative claims and the cited references, (D) a detailed explanation of how each of the representative claims is patentable over the cited references, and (E) a showing of where the limitations of the representative claims are supported in the specification.

In an article in the September 2006 issue of IPT ("A 21st Century Strategy: When Time is of the Essence, Consider the New Petition to Make Special Practice"), Joseph S. Ostroff reminds us that an accelerated examination support document is already part of current "Make Special" practice, which became effective August 25, 2006.

Some of the items, like pointing out where each claim limitation finds support in the specification, might be done routinely to remove some burden from examiners. IPBiz generally likes the idea of non-limiting distinctions between the new invention and prior art, right in the specification.

Of the CSIRO WiFi business, Cynthia Karena reported: The CSIRO has denied it is using money earmarked for research to pay legal bills arising from its costly stoush over US patents, despite reports it has just cancelled an award-winning medical project to cut costs.

Independent sources estimate the CSIRO's legal action, in which it is fighting to win royalties for a wireless network technology used all over the world, has already cost up to $10 million.

IPBiz notes that URochester spent about $10 million in the COX-2 litigation and ended up with an invalid patent. IPBiz assumes the Rochester war was also a "costly stoush."

Of royalties: But patent attorney Chris O'Sullivan, from FB Rice & Co, predicted that some of these companies would start to break ranks and negotiate licence and royalty settlements with CSIRO.

"No one will want to be the last man standing and face litigation," Mr O'Sullivan said. "They will no doubt do more searching to try to undermine the patent, but I would expect to see them. . . break ranks and sign up (with the CSIRO). The more licences are taken, the more pressure will build on those without them."

IPBiz had reported the flip side of the royalty game: The case does illustrate a problem an industry "outsider" (like CSIRO) faces in licensing a patent: CSIRO spent several years attempting to get companies to license its technology without success. "A lot them said we'll pay it if the other guy pays it," explains Furniss. "No one wants to pay a royalty if the competition doesn't pay too."

One also has the text:

Most of the outstanding legal actions are in California courts. Stephen Wilson, a principal at Australian patent attorneys Griffith Hack, says the Buffalo judgement is probably not binding on the courts in California.

IPBiz notes that saying "not binding" is probably not the best way to put the issue. As the CAFC said in Pharmacia v. Mylan: The Supreme Court held that "once the claims of a patent are held invalid in a suit involving one alleged infringer, an unrelated party who is sued for infringement of those claims may reap the benefit of the invalidity decision under the principles of collateral estoppel." Mendenhall v. Barber Greene Co., 26 F.3d 1573, 1577, 31 USPQ2d 1001, 1003 (Fed. Cir. 1994) (summarizing the Supreme Court's holding in Blonder-Tongue). An unrelated accused infringer may likewise take advantage of an unenforceability decision under the collateral estoppel doctrine. See General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1413, 30 USPQ2d 1149, 1155-56 (Fed. Cir. 1994) ("The principle of Blonder-Tongue . . . respecting collateral estoppel also applies to unenforceability.").

Thus, a patent once found invalid (through pertinent levels of appeal) is invalid as to all. HOWEVER, a patent once found valid may still be challenged, although later assertions of invalidity would presumably be based on different arguments.

In the CSIRO matter, if the California DJ plaintiffs used the same arguments as Buffalo did in ED Texas, they would likely not be successful.

Monday, November 20, 2006

Out-law notes that Universal argues in its copyright suit against MySpace that the terms and conditions of the site are designed to absolve it of responsibility for material posted but that they do not. According to news agency AP the suit says that MySpace asks users to agree to grant MySpace a licence to publish all the content that the user uploads. Users, though, have no right to grant such a licence for content they do not own, it says.

AP picked up on a report by Chronicle of Higher Education on the highest paid university presidents. David P. Roselle of the University of Delaware is the highest-paid public university president this year, receiving $979,571 in pay and benefits. At $880,950, Purdue University President Martin C. Jischke is number 2. One wonders how well the administrators at plagiarism-plagued SIU made out.

Puzzling text at powerlineblog: In her weekly column as the Star Tribune's reader's representative, Kate Parry reflects on the the partial plagiarism committed by a recent Star Tribune editorial: "Can a writer unintentionally plagiarize?" To be clear, IPBiz notes it is the Kate Parry column on November 18 which is entitled --Can a writer unintentionally plagiarize?--, not the editorial on November 10.

Among other things, Kate Parry wrote about a Star Tribune editorial on Nov. 10 which apparently had borrowed from text by Hendrik Hertzberg in the Nov. 6 issue of the New Yorker magazine:

Editorial page editor Susan Albright began investigating what had happened. The results of her probe were described in an editor's note published on the editorial page Wednesday, which read in part: "The writer ... took notes on the Hertzberg piece, intending either to directly quote him or otherwise include some of his views. ... Later, in consulting these notes, the writer inadvertently failed to distinguish which parts were direct quotes and which were paraphrased ideas, resulting in the writing of phrases that included an unattributed, improper mix of the two. ... "

Albright detailed phrases in the Hertzberg piece reproduced almost word-for-word in the editorial. Those phrases were "festival of bribery" and "the subcontracting of environmental, energy, labor, and health-care policymaking to corporate interests; ... efforts to suppress scientific truth." Hertzberg's phrase "a set of fiscal policies that have slowed growth, spurred inequality, replenished the ranks of the poor and uninsured, and exacerbated the insecurities of the middle class" had been paraphrased in the editorial to "economic policies that exacerbate inequality, heighten middle-class anxiety and expand the ranks of the poor and uninsured."

As to Parry's headlined question, one presumes Parry's answer is "yes":

But this case is exceptional, cutting to the core of the newspaper's credibility. There are really only two reasons plagiarism occurs, one far worse than the other, but neither is good. Intentional plagiarism is a theft. Unintentional plagiarism reveals sloppiness. Neither inspires reader confidence.

Nevertheless, in some circles, plagiarism, like patent infringement, is a strict liability offense. Ask the students at Ohio University.

Plagiarism is taken seriously by The Kansan and the School of Journalism. It’s emphasized from the minute students begin taking classes and it’s something no one will tolerate. While I wish we could stop every instance of it, I know that, for some reason, students at this University try it and think they can get away with it.

Whether Breitenstein deliberately took the material or not can’t be proven. The fact is, however, words appeared under her byline that were not her original idea and were not attributed. The fact is, her work did not comply with the standards of journalism we expect all of our writers to adhere to.

IPBiz notes that time and again, students are held to a higher standard than their professors, or other professionals. The Harvard Crimson hammered away at this during the Laurence Tribe matter, but the Tribe matter evaporated.

DePuy Spine gets another chance; Impax gets a remand in riluzole case

Reuters notes that the CAFC revived part of a patent infringement case on Nov. 20 that Johnson & Johnson subsidiary DePuy Spine is pursuing against the spinal business of Medtronic Inc. This is but one part of a large IP war.

The CAFC overturned a ruling by a federal district judge who had dismissed J&J's charges that Medtronic's Vertex system of spinal surgery screws infringed on a patent DePuy licenses from Biedermann Motech GmbH.

Kenneth Adamo represented DePuy Spine, the plaintiff-appellant in the case. D Mass had granted SJ of noninfringement to Medtronic.

Medtronic lost on a claim construction issue as to the meaning of the term "hollow spherically-shaped portion."

The doctrine of equivalents was also implicated. The CAFC cited Freedman, 420 F.3d 1350 as to the all elements / claim vitiation concept. The CAFC also worked through Sage Products, 126 F.3d 1420. Discussing Tronzo, the CAFC seems to say that a cone-shaped structure can be the equivalent of a spherically-shaped structure.

****In Impax v. Aventis, appellant Impax lost on an inequitable conduct issue but prevailed on an anticipation issue. The drug at issue was riluzole (Rilutek).

Impax argued that claims 1-5 of the '814 patent of Aventis were anticipated by the '940 patent. An issue was that the disclosing chemical formula of the '940 encompassed many, many compounds, and that the '940 did not teach particularly the effectiveness of riluzole in treating ALS. Thus, the issue was one of enablement of the '940. The CAFC cited Novo Nordisk, 424 F.3d 1347 as to the difference between enablement for 102 and enablement under 112. The CAFC remanded to the district court to make proper factual findings to reach an appropriate legal conclusion as to the enablement of the '940 reference.

"Truth is truth, there's no sense reinventing the wheel. If you got something that's a good product, why go out and beat your head against the wall and try to come up with it yourself?"

IPBiz asks: what if this were applied to the contents of patents?

The article continues:

These days, a lot of preachers would agree. The sermon — an oration traditionally expressing the thoughts of the cleric doing the talking — has entered the age of reruns. Topics and transcripts are available on sites like sermoncentral.com, pastors.com, sermonspice.com, and desperatepreacher.com. In the old days, when a preacher wanted to pinch a sermon, he had to consult a book, a magazine or a sermon anthology.

On the pro-plagiarism side: The plagiarism debate grew louder in recent months after a sermon site posted an essay by the Rev. Steve Sjogren titled, "Don't be original, be effective!" Sjogren urged pastors to quit spending time striving for originality and instead, to recite the words of better sermonizers.

On the other side, Thomas G. Long, a preaching professor at the Candler School of Theology at Emory University in Atlanta is quoted: "To play easy with the truth, to be deceptive about where the ideas come from, is a lie."

The issue of attribution comes up, reminding one of statements made during the George Shultz plagiarism flap at Stanford:

Ministers don't agree about the necessity of attribution. Mark Evans, senior pastor at the Church at Rock Creek in Little Rock, Ark., says he routinely credits "Purpose Driven Life" author Rick Warren from the pulpit. Warren says that's unnecessary. "They are preaching a sermon, not footnoting a term paper," Warren writes in an e-mail.

IPBiz notes that the students at Ohio University didn't think it was necessary to footnote previously-done, well-understood material in their theses, which was merely background to the "sermons" they were delivering. Ohio University has decided otherwise.

[The text in the Naples newspaper came from Suzanne Sataline of The Wall Street Journal.]

Saturday, November 18, 2006

A recent article on embryonic stem cells in the Pensacola News-Journal makes no mention of the use of SCNT (or therapeutic cloning) in the embryonic stem cell business:

Medical experts say research using only embryonic stem cells is necessary because the cells are different from adult cells. Embryonic cells can multiply into an unlimited number of specialized cells. Their adult counterparts are more rare and develop only cells similar to the tissue from which they were taken.

By generating these embryonic cells, medical researchers expect to learn about diseases that start with problems in this process. It could lead to correcting the cancer cells and birth defect cells.

Also, embryonic stem cells could be a renewable source of replacement cells and tissues to treat diseases and disabilities such as Parkinson's and Alzheimer's diseases, spinal cord injury, stroke, burns, heart disease, diabetes and rheumatoid arthritis.

Friday, November 17, 2006

InformationWeek added some detail on the significance of CSIRO victory in ED Texas.

Townsend and Townsend and Crew, CSIRO's law firm, asserted the decision demonstrates the strength of CSIRO's position, and "has broad implications for the wireless industry as a whole."

A declaratory judgment [DJ] action in ND Ca (San Francisco) has been on hold pending a ruling in the Texas case. CSIRO wants to transfer all related litigation to Texas and the judge in ND Ca is expected to rule on that motion next week. If the case is transferred to ED Texas, it will be a blow to the DJ plaintiffs, Dell, Intel, Hewlett-Packard, Microsoft, and Netgear.

"The [ED Texas] ruling found that Buffalo's devices infringed," says Daniel J. Furniss, a partner at Townsend and Townsend and Crew, who believes that the patent applies to any product using the 802.11a or 802.11g standards for wireless communication.

The case does illustrate a problem an industry "outsider" (like CSIRO) faces in licensing a patent: CSIRO spent several years attempting to get companies to license its technology without success. "A lot them said we'll pay it if the other guy pays it," explains Furniss. "No one wants to pay a royalty if the competition doesn't pay too."

Dr. Avram Hersko, who shared the chemistry Nobel in 2004, is a named inventor on U.S. Patent 6,528,633 (issued March 4, 2003 and assigned to President and Fellows of Havard College (Cambridge, MA); Rappaport Family Institute for Research in the Medical Sciences (Haifa, IL)), entitled "Cyclin-selective ubiquitin carrier polypeptides."

Although Vered Solomon does not seem to be a listed inventor on a US patent, her papers are cited in US Patents, such as her paper, "The N-end Rule Pathway Catalyzes a major Fraction of the Protein Degradation in Skeletal Muscle," The Journal of Biological Chemistry, vol. 273, No. 39, pp. 25216-25222, Sep. 25, 1998, cited in US 7,074,620, Controlling protein levels in eucaryotic organisms, which is a continuation of application Ser. No. 09/406,781, filed Sep. 28, 1999, now U.S. Pat. No. 6,306,663

On November 9, Superior Court Judge Thomas Kelly in Trenton (Mercer County), ordered Patrick Kelly of United Fuel Cell Technologies to pay $400,000 in restitution, according to the New Jersey Attorney General's Office.

Kelly collected approximately $2.5 million between 2000 and 2004 from about 500 investors, mostly New Jersey residents.

"Mr. Kelly claimed to offer investments in a breakthrough technology. In reality, he offered only lies," said Division of Criminal Justice Director Paw. "We have ensured that he will be appropriately punished for his greed and deception."

Hydrogen fuel cells generate energy use hydrogen with water as a product of the reaction. The problem was that Kelly (who also operated under the name Genesis World Energy) fraudulently claimed to have invented a process to separate the hydrogen and oxygen molecules in water to produce hydrogen and oxygen gases to be burned as fuel or used in fuel cells. He claimed the technology would free the U.S. from dependence on oil from the Middle East.

The Division of Criminal Justice obtained a state grand jury indictment on Sept. 23, 2005 charging Kelly with second-degree securities fraud in connection with his sale of “common stock” in United Fuel Cell Technologies. The indictment alleges that he falsely claimed that United Fuel Cell Techologies was a Delaware corporation, and that Hewlett Packard and IBM had agreed to assist the corporation in developing and marketing its technology and related products. In fact, United Fuel Cell Technologies was never incorporated, and Hewlett Packard and IBM did not make any agreement with the company. Kelly also was indicted on second-degree charges of conspiracy and theft.[text from ZPEnergy]

One notes that some claims in the area of embryonic stem cell research are not that distinct, in terms of real-world achievability, from what United Fuel Cell Technologies was pushing. One year after Hwang's fraud was revealed, no one has created embryonic stem cell lines through SCNT. And, on the patent front, so-called experts are not realistically assessing the impact of the patents of Thomson / WARF. Unless Jerseyans want to get burned some more, they ought to be more skeptical about promises in the embryonic stem cell area.

Scott Jaschik at InsideHigherEd has more on the plagiarism issues surrounding a book by R. Fred Ruhlman published by the University of Tennessee Press. It seems that William Marvel, the plagiarized author, discovered the similarities after he was asked to review Ruhlman’s book for The Georgia Historical Quarterly.

Jaschik writes: In an interview Tuesday (Nov. 14), Ruhlman said that he worked on the book for six years and that “it has become quite evident that I still have learning to do about producing a scholarly work.”

He characterized the overlap with Marvel’s book as being in 8 to 10 paragraphs in which he had engaged in “very close paraphrasing” without necessary attribution. Ruhlman said he had engaged in “some soul-searching” to try to figure out what happened, and that he’s not sure. [IPBiz note: this sounds worse than what the students were doing at Ohio University.]

(...)In an interview, Marvel said that he hadn’t heard of Ruhlman’s book until he was asked to review it. After he found numerous similarities — he said that they are "more extensive" than Ruhlman suggested — he called back the editors at The Georgia Historical Quarterly and said he didn’t feel he could be objective in his review. Eventually, he was persuaded to write the review (which focuses on the similarities) and to tell the Tennessee press about his concerns.

***Jaschik also stated that Ruhlman said he first worked on Andersonville for his dissertation at the American University of London, so there is a potential issue with the thesis itself.

Fellow blogger Kevin Levin has a lengthy post on his blog today [Nov. 14] that spells out, in great detail, the plagiarism scandal that has hit the realm of Civil War academia. Prof. R. Fred Ruhlman, who teaches Civil War history at the University of Tennessee at Chattanooga, apparently plagiarized most of his new book on Capt. Henry Wirz and the Andersonville prison camp from the work of Prof. William Marvel.(...)As Peter Carmichael points out in a comment to Kevin’s post, the process of peer review employed by university presses usually catches this sort of thing, but this one got through. Ruhlman is, of course, responsible for his own actions, but the fact that this book got through the vetting process at the University of Tennessee Press, which is a very well-respected university press, doesn’t speak well for the Press.

US Federal Court of the Eastern District of Texas granted summary judgment in favor of the CSIRO's patent. Judge Davis also granted summary judgment that the defendant, Buffalo Technology, had infringed CSIRO's patent.

Previously, Microsoft, Dell, Hewlett Packard, Intel and Netgear had taken legal action against the CSIRO in an attempt to break its US patents for wireless LANS, including elements of the 802.11a/g Wi-Fi technology that has since become an industry standard, and CSIRO still faces major hurdles in California with two separate cases taken against it by Intel and Dell, and Microsoft, Hewlett-Packard and Netgear a year ago.

Belgian cancer diagnosis company Ion Beam Applications said on Nov. 17 that the CAFC had overturned a rival's patent right claims, allowing IBA to sell proton therapy beam systems in the United States.

According to Forbes (through AFX), Novo Nordisk AS is suing Jon Dudas, the director of the US Patent and Trademark Office [USPTO] asserting the USPTO has misinterpreted data, evidence and legislation in rejecting two patent applications. The technical area is the AERx inhaled insulin delivery system.

Typically, an unsuccessful patent applicant appeals to the Board (BPAI) and then if still unsuccesful may take the case to the CAFC.

The source for the story is the daily Boersen, which cited Lars Kjellberg, head of Novo Nordisk's patent unit.

Novo Nordisk's American affiliate is located in the Princeton area, right on US Route 1.

Thursday, November 16, 2006

Los Gatos,CA based Monolithic, a fabless manufacturer of high-performance analog and mixed-signal semiconductors, said the United States Court of Appeals for the Federal Circuit upheld a finding by a district court the MPS inverter controllers at issue do not infringe Cayman Islands-based O2 Micro's patent on technology for CCFL inverter.

O2 Micro holds US 6,259,215 on a circuit for converting DC into AC.

Of significance, the trial was in ND Ca which has local rules for patent litigation, which in part require parties, early in litigation, to state theories of infringement and invalidity. The CAFC determined that the law of the CAFC (not of the Ninth Circuit) governed the CAFC analysis. The CAFC cited to Advanced Cardiovascular, 265 F.3d 1294.

The CAFC noted discovery is in part to allow plaintiff to pin down defendant's theories of defense.

The CAFC found there was a lack of diligence by O2 Micro in amending its theories.

***Separately, in an errata issued on Nov. 15, the CAFC removed "scoop" and substituted scope, in the case Akeva v. Adidas.

The Federal Court of Canada found that the Calgon's Canadian patent for the use of ultraviolet light to prevent infection from a certain parasite, cryptosporidium, in drinking water is invalid. (from BusinessWeek)

Recalling that the author of the "seafood collapse by 2048" article in Science termed the projection something that could act as a "news hook to get people's attention," one finds a similar strategy in the global warming biz:

The Nobel Prize-winning scientist who first made the proposal of deliberate injection of pollutants into the atmosphere is himself "not enthusiastic about it."

"It was meant to startle the policymakers," said Paul J. Crutzen, of Germany's Max Planck Institute for Chemistry. "If they don't take action much more strongly than they have in the past, then in the end we have to do experiments like this."

Previously, the Dutch climatologist, awarded a 1995 Nobel in chemistry for his work uncovering the threat to Earth's atmospheric ozone layer, suggested that balloons bearing heavy guns be used to carry sulfates high aloft and fire them into the stratosphere.

The Trentonian on fraud at New Jersey UMDNJ

On Nov. 14, the Trentonian discussed the federal monitor's report released on Nov. 13:

The report by monitor Herbert J. Stern found the university made $5.7 million in illegal payments to physicians since 2002 in return for them referring their heart patients to UMDNJ. In return, the doctors were given no-show teaching jobs of $150,000 or more per year.

Stern also noted: The illegal activity persists to this day, despite the settlement of a lawsuit for $2.2 million paid to a whistleblower who claimed that he was fired for portesting the illegal scheme.

In response, Anna Farneski siad the university's counsel did fail to tell the monitor --as well as the UMDNJ management-- about the settlement.

The Trentonian had a separate story noting that the Legislative Comittee on Ethical Standards decided to have its attorney (Albert Porroni) gather evidence of Senator Wayne Bryant. Bryant was accused of bringing 4.7 million in funding to the UMDNJ in return for a no work job.

See also:http://ipbiz.blogspot.com/2006/11/more-on-fraud-at-jerseys-umdnj.html

"In football terms, we have decided to drop back ten and punt," said President Lawrence Summers. "We have a lot of egotists here who feel they have the right to steal other people's words. What am I supposed to do - I'm not a dorm mother."

Under the new policy students and faculty who use the work of others without attribution will be referred to as "recyclers" and will not be subject to penalties.

"Recycling is a good thing," Summers said. "Once somebody's words are published they could end up blowing down the street, or clogging up a storm drain or messing up your yard. We want our students and scholars to make the world a cleaner, better place."

IPBiz notes that Summers is no longer the president of Harvard. Separately, it is not evident that Harvard faculty plagiarists were in fact subject to any penalties. Plagiarists on the Crimson did not fare well. Nor did accused student plagiarists at Ohio University.

Opti asserts that AMD has infringed claims of three of its patents (US 5,710,906, 5,813,036 and 6,405,291) for a technology known as "Predictive Snooping of Cache Memory for Master-Initiated Accesses".

Wednesday, November 15, 2006

Nov. 15: the day Schatten started to retreat from Hwang

English.chosun presented an article on stem cell work on Nov. 15, 2006, the one year anniversary of Schatten's migration from Hwang Woo-Suk.

The article did not mention any work in SCNT. The article did mention other work, including the following:

Novocell, a stem cell engineering company in California, announced on Oct. 18 that it has developed a process that efficiently converts human embryonic stem cells into insulin-producing pancreatic endocrine cells. The company said once animal tests confirm the safety and validity of its findings, it will apply for approval from the U.S. Food and Drug Administration to start clinical tests to directly transplant such cells into diabetic patients at the end of 2008.

The article also discussed the Hwang trial, including the following:

Meanwhile, the sixth hearing of Hwang’s fraud case at the Seoul District Court on Monday drew crowds despite coming some five months since the trial started. The 190-seat court room was packed, with some having to stand in the isles or at the back. Hwang, charged with embezzling public and private research funds, answered questions from the prosecutor with characteristic fluency. He again denied falsifying data and reiterated his claim that he was “deceived” by junior researcher Kim Seon-jong. The prosecutor and Hwang engaged in a heated exchange at one point when the defendant interrupted the prosecutor, saying "Let me explain first" and the prosecutor shouted back, "You answer my question first.” Some in the courtroom gave Hwang a round of applause and hollered "Cheer up!" after the hearing.

U.S. Attorney Christopher Christie has begun an investigation into charges that the University of Medicine and Dentistry of New Jersey paid nearly $6 million in illegal kickbacks to 18 cardiologists in exchange for patient referrals.

At the same time, Christie said he was particularly disturbed by findings that UMDNJ had violated a deferred prosecution agreement with the government by failing to cooperate with the university's federal monitor on a five-month inquiry into the matter.

From the Asbury Park Press (Nov. 14):

South Jersey political boss George E. Norcross III wants the state to build a new four-year medical school in downtown Camden in partnership with the University of Medicine and Dentistry of New Jersey. That's the last thing this state needs — a UMDNJ South.

Monday, November 13, 2006

In recent weeks, 19 of 22 people charged so far in the undercover investigation [of marriage fraud] have pleaded guilty in federal court in Alexandria, including bank tellers, car salesmen and health-care workers. Court testimony and interviews document how Ghanaian immigrants married U.S. citizens they had met the same day, then were coached on how to fool immigration inspectors, usually months later, into believing that the marriage was real. All they wanted, they said, was to stay in the United States.

The text includes:

One of the first to arrive was Samuel "Sam" Acquah. Born in Ghana in 1949, Acquah came to the United States on a student visa. He got a master's degree, a law degree from George Mason University and a $112,000-a-year job in the chemical engineering section of the U.S. Patent and Trademark Office [USPTO] in Alexandria.

As more Ghanaians arrived, Acquah wanted to help them stay. Better yet, he thought, he could make money doing it by finding strangers to marry them quickly after their visas expired.

Informally, he named his business "the program." When a fellow Ghanaian called, Acquah would charge the immigrant $3,000 to $3,500. Two employees were Acquah's "contacts" and helped find U.S. citizens willing to get married for money. Acquah split the profit with his contact, who paid the U.S. citizen $500.

Acquah set up shop in his government office [ie, at the USPTO], using his government-owned fax machine to communicate about illicit marriages.

***This was posted on Nov. 13, but, for some reason, did not appear on IPBiz. Separateley, IPBiz was inaccessible for more than one hour on Nov. 13.

William Marvel, an author of several Civil War books, said the book, “Captain Henry Wirz and Andersonville Prison,” by University of Tennessee (Chattanooga) adjunct professor Fred Ruhlmann, contains several instances of unattributed material from his 1994 book, “Andersonville: The Last Depot.”

In the meantime, the University of Tennessee Press has suspended all sales of Dr. Ruhlman’s book because of the allegations, according to a statement issued by the press.

Noting that plagiarism is a bad thing, IPBiz has observed that the publishing false things, or making improper assertions of novelty, is a worse thing.

In the law review business, if someone has already addressed a particular issue, a later person is not supposed to write on the same question. Of Carhart's suggestion of Lee's "real plan" at Gettysburg, one notes the following from a review by Steven Leonard of a 2002 book by Paul D. Walker:

In The Cavalry Battle that Saved the Union:Custer vs. Stuart at Gettysburg, Paul D. Walkerreveals the apparent genius behind the plan:Confederate General Robert E. Lee's grand scheme wasto attack with infantry from the front whileConfederate General J.E.B. Stuart's cavalry swept intothe rear of the Union formations.

(...)D. Scott Hartwig got it right when he wrote:

Our final book this month is yet another revelation of Robert E. Lee’s real plan at Gettysburg. Tom Carhart, in Lost Triumph: Lee’s Real Plan at Gettysburg—and Why it Failed (G.P. Putnam’s Sons, New York, 2005), contends that Lee planned to attack the Union rear with Jeb Stuart’s cavalry while James Longstreet’s assault struck their front on Cemetery Ridge, and that the plan failed due to the bravery and impetuousness of George Custer. Carhart is not the first to advance this notion of Lee’s plan for July 3. It has been around for many years, but lacks evidence to support it.

***Carhart is treated more favorably in a Washington Times op-ed by Milton Capulos about James Webb wrongly claiming credit for the statue at the Vietnam War Memorial in DC.

***Carhart is treated less favorably in an email I received from an IPBiz reader, which included the text:

There are many experts (as much as one can be) on the Battle of Gettysburg. As of lately, 4 have been ‘cast’ into a ‘revisionists’ camp – namely Andrea Custer, Troy Harmon, Tom Carhart and Charles (Chuck) Teague. Most of their musings cannot be supported by ANY historical evidence and therefore inevitably makes one to conclude that all their ‘findings’ are nothing more but self-glorifications and money-makers.

(...)Another interesting thing to observe in this topic is constant erroneous habit of pitting Stuart against Custer . George Armstrong Custer is NOT a General responsible for the Union victory on the Field – David McMurty Gregg is. It is Gregg ’s experience, tenacity and leadership that win the day for the Blue-clad Cavalrymen on the afternoon of July 3 – it is he who checks Stuart ’s advance and spoils his plans. Whatever Custer ’s contribution to the Battle may be (and unquestionably he HAS MADE ONE , if not a couple) – he does not deserve THAT much of a credit. It’s like saying that the Battle of Gettysburg was Hancock vs. Lee or perhaps Longstreet vs. Meade …

***As a note to IPBiz readers, I have an article on patent reform coming out which actually talks about George Armstrong Custer and Day 3 of Gettysburg and Little Big Horn. [to appear in JPTOS, December 2006]

I am Tom Carhart, author of five military history books, the most recent of which, LOST TRIUMPH, is about the Battle of Gettysburg, with emphasis on the fight on East Cavalry Field. I understand plans have been made to place a gambling casino at the intersection of Route 15 and York Road in Gettysburg, less than a mile from East Cavalry Field. The crucial significance of East Cavalry Field has only just begun to be realized, as it was the outcome of the cavalry fight there that determined victory or defeat for the two sides in the larger Battle of Gettysburg. As a key place in American history, that area needs special protection. Professor James McPherson, Pulitzer-Prize winning author of BATTLE CRY OF FREEDOM, has formally recognized the importance of that ground when he says, in his Foreword to my book, “One cannot understand the Battle of Gettysburg without understanding what happened at what was then known as East Cavalry Battlefield”.

Several authors have recently “discovered” the horse soldiers who clashed at Gettysburg’s East Cavalry Field. Most of them assert that J.E.B. Stuart’s cavalry endeavored to strike the Union rear in conjunction with Pickett’s Charge on July 3, or at the very least cause havoc if the Confederate infantry assault was successful.

(...)There’s inadequate space in a book review to cite each factual error, contradiction and unsupported theory. Suffice to say, this reads more like a novel than historical analysis.

I can't say I blame you...I probably wouldn't have picked up the [Carhart] book had I not seen it for $5 at an outlet bookstore. Like you, the biggest problem I had with the book was the supposition that Longstreet and, apparently, Lee's staff as well, were not told of the plan. And to top it off, Carhart also does quite a bit of Longstreet bashing (and I'm a Longstreet man). I also agree that making Custer the savior of Gettysburg is a farce; while he played a key part in stunting Stuart's attack, the battle was ultimately decided by the infantry and artillery at Cemetery Ridge and Little Round Top...

Andy, IMHO there cannot be any "Signal" to Lee by any number of cannon shots.....

Let me clarify that........

You could make 'a case' for that being true.......but how the hell anyone is supposed to distinguish such a thing? .....And since that IS THE ENTIRE basis for Carharts load of dung......you can't just skip it.....Stan is right about that.

Carhart is so full of sh** I cant even imagine anyone would fall for it........talk about a desperate venture, that guy ought to have his head cracked for compiling such a disingenous and far fetched piece of fantasy........

I agree with Jim. Its about the worst crock of steaming excrement I have ever read........

If you are going to believe Carhart, you really have to live and die with him.......you cant pick and choose........

I'm a big fan of the Cav charge up the Baltimore Pike........thats really window-licking rich.......

First off, the idea that Jeb might have been slated to assault the Union rear and that the random cannon shots might have been a signal to Lee is not Carhart's brainchild (or brainfart if you'd prefer). Others then and now have speculated that that may have been the case. Carhart just took the idea and fleshed it out a bit; If you creak open the heads of all the historians that do that there won't be any left.

Quote:If you are going to believe Carhart, you really have to live and die with him.......you cant pick and choose........

Sure I can. He's just an armchair historian with a few ideas...he's not the Pope.

[Rick says-->]

Carhart and I agree that Stuart was on the left of the ANV, but that's about where we part company.

I dont think Jeb was out there to sit still....and he would have certainly have enjoyed romping along the Baltimore Pike ...but the whole coordinated assault theory and the grand charge up the Pike, leave me shaking my head.

To me anyway, the first is just a pipe dream and the second is tactical madness.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.